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Case 1 :06-cv-00788-JJF Document 203 Filed 05/20/2008 Page 1 of 4
Asn-IEY & GEDDES
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May 20, 2008
The Honorable Vincent J. Poppiti VIA HAND DELIVERY
Special Master and ELECTRONIC FILING
Blank Rome LLP
Chase Manhattan Center, Suite 800
Wihnington, DE 19801-4226
Re: ProMOS Technologies, Inc. v. Freescale Semiconductor, Inc.,
C.A. No. 06-788-JJF (QM )
Dear Judge Poppiti:
Plaintiff ProMOS Technologies, Inc. ("ProMOS") respectfully submits this opposition to the
letter brief filed by Freescale Semiconductor, Inc. ("Freescale") seeking to compel ProMOS to
respond to Freescale’s Interrogatory No. 30. In what purports to be a single interrogatory,
Freescale’s Interrogatory No. 30 asks ProMOS to do the following for each of 60 different
Requests for Admission ("RFAs") served by Freescale: (i) state each fact that supports or is
contrary to ProMOS’s response to each RFA; (ii) identify each document that relates to each
identified fact; and (iii) identify each person with knowledge of each such fact. As such,
Interrogatory No. 30 runs afoul of the limit of 35 interrogatories set by Judge Faman in this case,
not just by a few but by at least 57 interrogatories. Federal courts consistently have rejected the
use of RFAs to circumvent limits on interrogatories in this manner. Moreover, Interrogatory No.
30 inappropriately seeks to convert the RFA process into a device for expanding discovery on
new or additional factual issues — as opposed to its intended purpose of narrowing factual issues
— a strategy that has been disfavored by federal courts. ProMOS therefore should not be required
to supplement its answer to Interrogatory No. 30.
(i) Under well-established counting rules, Interrogatory N 0. 30 counts as 60 separate
interrogatories.
Interrogatory No. 30 incorporates by reference 60 different RFAs that were served by Freescale
in discovery. It is well settled, therefore, that Freescale’s Interrogatory No. 30 counts as 60
separate interrogatories. Accordingly, the 92 total interrogatories served by Freescale vastly
exceeds the limit of 35 interrogatories established by Judge Farnan in his Rule 16 Scheduling
Order. E, gg, Wolk v. Green, 2007 WL 3203050, *2 n.4 (N .D. Cal. Oct. 29, 2007) ("[a]n
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The Honorable Vincent J. Poppiti
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interrogatory inquiring as to basis of responses to requests for admissions is treated as an
interrogatory with subparts" and each RFA should be counted as a separate interrogatory);
Stevens v. Federated Mutual lnsur. Co., 2006 WL 2079053, *6 (N .D. W. Va. July 25, 2006)
(finding that a single interrogatory counted as 11 interrogatories because it sought information
regarding 11 different RFAs); American Chiropractic Ass’n v. Trigon Healthcare, Inc., 2002 WL
534459, *3 (W.D. Va. Mar. 18, 2002) (counting the 7 RFAs referenced in a single interrogatory
as 7 separate interrogatories).
Moreover, it is important to note that Freescale cannot, as it has attempted to do in its letter briefQ
simply count the 12 RFAs that it wishes to have addressed now, skipping over the remaining 48
RFAs as though they do not count toward the limit. Sep Walker v. Lakewood Condominium
Owners Ass’n, 186 F.R.D. 584, 589 (C.D. Cal. 1999) ("a party cannot unilaterally and randomly
select those supemumerary interrogatories [to] which it will seek to compel answers"). ProMOS
cannot be expected to have known which of the RFAs Freescale cared about the most at the time
the discovery was served. Moreover, pennitting a party to abandon interrogatories after they are
served and thereby skip them for counting purposes only creates the incentive for that party to
"simultaneously circumvent the whole purpose of the numerical limit and harass an opponent by
serving the maximrun number of interrogatories and then ‘withdrawing’ all of them on or after
the date the opposing party incurred the burden of preparing and serving objections or verified
answers." Q at 588. Freescale must justify the interrogatory as it was originally drafted (i.e. ,
with 60 different sub—parts), not as Freescale would re-draft the interrogatory now if it had the
opportunity to do so.
Nor can Freescale succeed in lumping any of the RFAs together simply because they relate to the
same broad issue in the case. See, gg,, American Chiropractic Ass’n v. Trigon Healthcare, Inc.,
2002 WL 534459, *3 (W.D. Va. Mar. 18, 2002) (counting each referenced RFA as a separate
interrogatory because "[a]lthough the theme of the requests is similar, each may be fully and
completely answered without reference to the others"). The only case cited by Freescale in
support of its position is Estate of Manship v. U.S., 232 F.R.D. 552, 557 (M.D. La. 2005). But
the court in that case actually fotmd that the interrogatory at issue counted as numerous
interrogatories because it referenced numerous RFAs. Q Moreover, the Manship court
premised its ruling on Safeco v. Rawstron, 181 F.R.D. 441 (C.D. Cal. 1998), which in tum noted
that "as a practical matter, [it] will ahnost always be the case" that RFAs will relate to separate
subject matters and thus that "a strong presumption that each underlying request for admission
constitutes a separately countable subpart should be adopted." Q at 446 (emphasis added).
The court noted that one of the few exceptions to this general rule would occur, for example, in
the case of "an interrogatory seeking the basis for the denial of three requests for admissions
which asked the responding party to admit that a specified meeting occurred on May 25, 26, or
May 27." Q That certainly is not the nature of the RFAs at issue here. Although Freescale has
attempted to group them into broad categories such as "1icensing," "inva1idity," and
"conception/reduction to practice," the factual issues presented by each of the RFAs is distinct.
For example, the 6 RFAs that Freescale has lumped together as relating to "invalidity" (RF As No.
41-45) seek admissions regarding entirely separate elements of a ntunber of different claims in
two different patents. Similarly, the 5 RFAs that Freescale has lumped together as relating to
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The Honorable Vincent J. Poppiti
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"conception/reduction to practice" (RFAs No. 46-48 and 59-60) actually relate to 5 separate
factual issues — (i) the circumstances and needs that led to the claimed inventions; (ii) whether
the original abandoned application shows conception of the claimed inventions; (iii) the date the
claimed inventions were ready for patenting; (iv) whether the original application discloses a
read hold register; and (v) whether the abandoned application discloses a memory update register.
And Freescale has not even tried to lump together any of the other 48 RFAs, all of which must be
counted toward the interrogatory limit even though Freescale has not elected to press them in its
motion to compel. S; Walker, 186 F.R.D. at 589.
(ii) Freescale should not be granted the right to serve additional interrogatories in this case
in order to compel ProMOS to respond to Interrogatory No. 30.
Freescale next suggests that if its first argument fails, the Special Master should expand the
number of interrogatories in this case and then compel ProMOS to respond to Interrogatory No.
30. In order to require ProMOS to respond to Interrogatory No. 30, this Court would have to
grant Freescale an additional 57 interrogatories beyond the original 35, for as noted above,
Freescale cannot simply pick and choose now which of the RFAs it wishes to have addressed,
and instead is stuck with the interrogatory as written. Walker, 186 F.R.D. at 589. There simply
is no basis for expanding the number of interrogatories allotted to Freescale in this case Hom 35
to 92.
In any event, Freescale’s request seeks to turn the rules of discovery on their head. Many courts
have noted that requests for admission are not a permissible method of obtaining fact discovery,
but rather a mechanism for limiting the areas of proof at trial, and therefore should not be used to
disguise additional interrogatories. In re Olggpia Holding Corp., 189 B.R. 846, 853 (Bkrtcy
N.D. Fla. 1995) ("Requests for admissions and interrogatories are not interchangeable
procedures ... Utilizing interrogatories disguised as requests for admissions in an attempt to
circumvent a local rule limiting the number of interrogatories is an abuse of the discovery
pr0cess."). As the Safeco court noted:
The purpose of Rule 36(a) is to expedite trial by establishing certain material facts
as true and thus narrowing the range of issues for trial. Their goal is to eliminate
from the trial matters as to which there is no genuine dispute. Therefore, requests
for admission are not principally discovery devices, and they ‘are not to be treated
as substitutes for discovery processes to uncover evidence.’ California v. Jules
Fribourg, 19 F.R.D. 432, 436 (N .D. Cal. 1955); gg 7 Moore’s Federal Practices
§ 36.02[2] (3d ed. 1991) ("Because Rule 36 was not designed to elicit irrforrnation,
to obtain discovery of the existence of facts, or [to] obtain production of
documents, requests for admission should not be used as a method of discovery
for those purposes."). Allowing service of an interrogatory which requests
disclosure of all of the information on which the denials of each of 50 requests for
admission were based, however, essentially transfonns each request for admission
into an interrogatory. This is not the purpose requests for admission were
intended to serve, and because Rule 36 imposes no numerical limit on the number
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The Honorable Vincent J. Poppiti
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of requests for admission that may be served, condoning such a practice would
circumvent the numerical limit contained in Rule 33(a).
Safeco, 181 F .R.D. at 445-46 (citations omitted). Freescale’s inappropriate effort to convert the
RFA process into a fact-gathering process should be rejected.
(iii) It would be both premature and inappropriate to order ProMOS to incorporate
specific matters into its supplementation of other discovery responses.
Finally, Freescale asks the Special Master to order ProMOS to address the substance of the RFAs
when it supplements its answers to other interrogatories (Nos. 4, 9, and 21) which Freescale
asserts "relate to the subject areas at issue in Interrogatory No. 30." FSI Br. at 2. But Freescale
has asserted no basis for assuming that ProMOS’s supplementation of these interrogatory
answers, due on June 9, will be deficient. Freescale’s request therefore is premature.
Moreover, if Freescale were correct that Interrogatories No. 4, 9, and 21 call for the same
information that was covered by Interrogatory No. 30, g, there would be no need to incorporate
Interrogatory No. 30 into the existing requests — Freescale could simply seek the Special
Master’s involvement if ProMOS’s responses do not address that information. To the extent,
however, that Freescale is seeking to stretch those interrogatories to cover topics that are not
already contained in them, this effort to retroactively revise interrogatories in order to circumvent
the discovery limits should be rejected.
For the foregoing reasons, ProMOS respectfully submits that Freescale’s May 13, 2008 letter
brief to the Special Master should be DENIED.
Respectfully,
/s/ Lauren E. Maguire
Lauren E. Maguire
LEM:mnl
cc: Mary B. Graham, Esquire (via electronic mail)
Steven J. Routh, Esquire (via electronic mail)
David L. Witcoff, Esquire (via electronic mail)
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